Promega Corp. v. Life Technologies Corp.
773 F.3d 1338
| Fed. Cir. | 2014Background
- LifeTech appeals grant of summary judgment that four Promega patents are invalid for lack of enablement and nonobviousness.
- Promega appeals JMOL that LifeTech’s products infringe the Tautz patent and challenges district court damages and cross-license ruling.
- District court construed Promega claims with an open “open loci set” limitation and held LifeTech liable for infringement of the Tautz patent under §271(a) and §271(f)(1), but denied enablement and obviousness challenges.
- LifeTech’s STR kits co-amplify recited loci and potentially unrecited loci; Promega argued broad open-ended coverage.
- The Federal Circuit reverses on enablement, holds LifeTech liable under §271(a) and §271(f)(1) for infringement of the Tautz patent, and finds the 2006 Cross License does not cover all LifeTech STR kit sales; damages are remanded.”
- The decision affirming/denying other issues is remanded for damages while costs are denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Enablement of Promega claims | Promega claims cover broad open loci sets | Open loci sets not enabled across full scope | Promega patents lack enablement |
| §271(f)(1) active inducement | LifeTech induced the overseas combination | No third-party inducement required; LifeTech liable | §271(f)(1) can apply without a third party inducing life |
| Substantial portion of components | Single US-supplied component can be substantial | Must be multiple components | Single component can suffice under §271(f)(1) given substantiality evidence |
| 2006 Cross License scope | License covers all LifeTech STR kit uses | License limited to forensics live investigations | Cross License does not cover all sales; limited field of use |
Key Cases Cited
- MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377 (Fed. Cir. 2012) (enabling scope cannot cover unforeseeable future embodiments (non-enabled breadth))
- Wyeth v. Cordis Corp., 720 F.3d 1380 (Fed. Cir. 2013) (broad genus claims require substantial disclosure or undue experimentation)
- Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342 (Fed. Cir. 1998) (starting point for enabling guidance; not full scope without routine experimentation)
- Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238 (2011) (validity requires clear and convincing enablement evidence; limits on interpretation)
- Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014) (inducement liability requires active conduct; limits extraterritorial analogies)